United States Court of Appeals 

for the Federal Circuit 

__________________________ 

BARD PERIPHERAL VASCULAR, INC. 

AND DAVID GOLDFARB, M.D., 

Plaintiffs/Counterclaim 

Defendants-Appellees, 

AND

C.R. BARD, INC., 

Counterclaim Defendant-Appellee, 

v. 

W.L. GORE & ASSOCIATES, INC., 

Defendant/Counterclaimant-Appellant. 

__________________________ 

2010-1510 

__________________________ 

Appeal from the United States District Court for the 

District of Arizona in case no. 03-CV-0597, Judge Mary H. 

Murguia. 

_________________________ 

Decided: June 14, 2011 

_________________________ 

 FRANK P. PORCELLI, Fish & Richardson, P.C., of 

Boston, Massachusetts, filed a combined petition for panel 

rehearing and rehearing en banc for the defendant/counterclaimant-appellant. With him on the petition 

was JOHN A. DRAGSETH. Of counsel on the petition were 

 
BARD PERIPHERAL v. WL GORE 2

JOHN S. CAMPBELL, W.L. Gore & Associates, Inc., of Newark, Delaware, and DAVID H. PFEFFER of Boca Raton, 

Florida. 

 JOHN C. O’QUINN, Kirkland & Ellis, LLP, of Washington, DC, filed a response to the petition for the plaintiffs/counterclaim defendants-appellees and counterclaim 

defendant-appellee. With him on the response were 

NATHAN S. MAMMEN, WILLIAM H. BURGESS, and DENNIS J.

ABDELNOUR. Of counsel on the response were STEVEN C. 

CHERNY of New York, New York; and GREGORY G. GARRE 

and MAXIMILIAN A. GRANT, Latham & Watkins LLP, of 

Washington, DC; and ANDREW M. FEDERHAR, Fennemore 

Craig P.C., of Phoenix, Arizona; and JOHN L. STRAND, 

Wolf, Greenfield & Sacks, P.C., of Boston, Massachusetts. 

PAUL D. CLEMENT, Bancroft PLLC, of Washington, 

DC, for amici curiae Verizon Communications Inc. and 

Intel Corp. With him on the brief was D. Zachary Hudson. 

Of counsel on the brief for amicus curiae Verizon Communications Inc. were JOHN THORNE and GAIL F. LEVINE, 

Verizon Communications Inc., of Arlington, Virginia; and 

for amicus curiae Intel Corp. was TINA M. CHAPPELL, Intel 

Corporation, of Chandler, Arizona. MICHELLE K. LEE, 

Google Inc., of Mountain View, California, for amicus 

curiae Google Inc. With her on the brief was SUZANNE 

MICHEL. 

__________________________ 

Before NEWMAN, GAJARSA,* and LINN, Circuit Judges. 

Opinion for the court filed by Circuit Judge GAJARSA. 

Opinion concurring-in-part and dissenting-in-part filed by 

Circuit Judge Newman. 

 * Circuit Judge Gajarsa assumed senior status on 

July 31, 2011. 
3 BARD PERIPHERAL v. WL GORE

GAJARSA, Circuit Judge. 

I. Introduction 

In deciding the present appeal, this court determined 

that the United States District Court for the District of 

Arizona (“trial court”) was correct in its judgment and 

affirmed all of the conclusions reached by the trial court. 

See Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., 

Inc., 670 F.3d 1171 (Fed. Cir. 2012). The appellant, W.L. 

Gore & Associates, Inc. (“Gore”), timely filed a petition for 

rehearing and rehearing en banc. Therein, Gore again 

faulted the trial court’s willfulness analysis. Separately, 

an Amici Curiae brief in support of that petition argued 

that the objective prong of willfulness should be considered a question of law subject to de novo review on appeal. 

This court granted the petition for rehearing en banc and 

returned the matter to the panel for reconsideration, see

En Banc Order, Bard Peripheral Vascular, Inc. v. W.L. 

Gore & Assocs., Inc., No. 2010-1510 (Fed. Cir. June 14, 

2012), for the sole purpose of revisiting the issue of willfulness and further explicating the standard of review 

applicable to it.

The court today reaffirms its opinion issued on February 10, 2012, except for section E and that portion of 

section F relating to Section 284 and 285 of Title 35 of the 

United States Code allowing for enhanced damages and 

attorneys’ fees.1 The court vacates section E and the 

limited portion of section F relating to its prior discussion 

of willfulness. The briefs related to the petition for rehearing present this court with a new question regarding 

the nature of the objective inquiry from In re Seagate 

 1 The court reaffirms its judgment regarding the 

ongoing royalty rates set by the trial court, which would 

not be found to be the result of an abuse of discretion even 

if there had been no finding of willfulness. 
BARD PERIPHERAL v. WL GORE 4

Technology, LLC (“Seagate”), 497 F.3d 1360 (Fed. Cir. 

2007) (en banc). The court agrees that the trial court 

failed to address the objective prong of willfulness as a 

separate legal test from Seagate’s subjective component. 

The court now holds that the threshold objective prong of 

the willfulness standard enunciated in Seagate is a question of law based on underlying mixed questions of law 

and fact and is subject to de novo review. The court 

remands the issue of willfulness so that the trial court 

may reconsider its denial of JMOL of no willful infringement in view of this holding. If the court grants the 

JMOL, it should then reconsider its decisions on enhanced 

damages and attorneys’ fees. 

II. Discussion 

A finding of willful infringement allows an award of 

enhanced damages under 35 U.S.C. § 284. Seagate, 

497 F.3d at 1368. Because Supreme Court precedent 

requires a showing of recklessness before civil punitive 

damages are allowed, Seagate overruled this court’s 

previous standard for willfulness, which was “more akin 

to negligence.” Id. at 1371. Seagate established a twopronged test for establishing the requisite recklessness. 

Id. Thus, to establish willful infringement, “a patentee 

must show by clear and convincing evidence that the 

infringer acted despite an objectively high likelihood that 

its actions constituted infringement of a valid patent.” Id. 

Once the “threshold objective standard is satisfied, the 

patentee must also demonstrate that this objectivelydefined risk . . . was either known or so obvious that it 

should have been known to the accused infringer.” Id. 

The Seagate court “le[ft] it to future cases to further 

develop the application of this standard.” Id. Following 

Seagate, this court established the rule that generally the 

“‘objective’ prong of Seagate tends not to be met where an 

accused infringer relies on a reasonable defense to a 
5 BARD PERIPHERAL v. WL GORE

charge of infringement.” Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1319 

(Fed. Cir. 2010). Thus, the question on appeal often posed 

is whether a defense or noninfringement theory was 

“reasonable.” See, e.g., Powell v. Home Depot U.S.A., Inc., 

663 F.3d 1221, 1236 (Fed. Cir. 2011). 

The ultimate question of willfulness has long been 

treated as a question of fact. See, e.g., Stryker Corp. v. 

Intermedics Orthopedics, Inc., 96 F.3d 1409, 1413 (Fed. 

Cir. 1996) (“The court’s finding of willful infringement is 

one of fact, subject to the clearly erroneous standard of 

review.”). And the court has made similar statements 

even after Seagate. See, e.g., Cohesive Techs., Inc. v. 

Waters Corp., 543 F.3d 1351, 1374 (Fed. Cir. 2008) (“‘The 

court’s finding [on] willful infringement is one of fact, 

subject to the clearly erroneous standard.’” (quoting 

Stryker Corp., 96 F.3d at 1413)); i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 859 (Fed. Cir. 2010) (citing 

Cohesive Techs, 543 F.3d at 1374, and stating “willful[ness] is a question of fact”), aff’d, 131 S.Ct. 2238 

(2011); Powell, 663 F.3d at 1228 (citing i4i, 598 F.3d at 

859); Spine Solutions, 620 F.3d at 1319 (citing i4i, 

598 F.3d at 859). The court has not been called upon, 

however, to clearly delineate the standard applicable to 

Seagate’s objective test. 

Since Seagate, however, even in those cases that have 

continued to recite the general characterization that 

willfulness ultimately presents a question of fact, our 

opinions have begun to recognize that the issues are more 

complex. For example, while this case was on appeal this 

court in considering the objective prong clarified that “the 

answer to whether an accused infringer’s reliance on a 

particular issue or defense is reasonable is a question for 

the court when the resolution of that particular issue or 

defense is a matter of law” but it “is properly considered 
BARD PERIPHERAL v. WL GORE 6

by the jury” “[w]hen the resolution of a particular issue or 

defense is a factual matter.” Powell, 663 F.3d at 1236-37. 

After reviewing the Supreme Court’s precedent in 

similar contexts, as well as our own, we conclude that 

simply stating that willfulness is a question of fact oversimplifies the issue. While the ultimate question of 

willfulness based on an assessment of the second prong of 

Seagate may be a question of fact, Seagate also requires a 

threshold determination of objective recklessness. That 

determination entails an objective assessment of potential 

defenses based on the risk presented by the patent. Those 

defenses may include questions of infringement but also 

can be expected in almost every case to entail questions of 

validity that are not necessarily dependent on the factual 

circumstances of the particular party accused of infringement. 

In considering the standard applicable to the objective 

prong of Seagate, it can be appreciated that “the decision 

to label an issue a ‘question of law,’ a ‘question of fact,’ or 

a ‘mixed question of law and fact’ is sometimes as much a 

matter of allocation as it is of analysis.” Miller v. Fenton, 

474 U.S. 104, 113-14 (1985). When an “issue falls somewhere between a pristine legal standard and a simple 

historical fact, the fact/law distinction at times has turned 

on a determination that, as a matter of sound administration of justice, one judicial actor is better positioned than 

another to decide the issue in question.” Id. at 114; see 

also Markman v. Westview Instruments, Inc., 517 U.S. 

370, 388 (1996) (applying this test to determine that claim 

construction is best left to the judge). We believe that the 

court is in the best position for making the determination 

of reasonableness. This court therefore holds that the 

objective determination of recklessness, even though 

predicated on underlying mixed questions of law and fact, 
7 BARD PERIPHERAL v. WL GORE

is best decided by the judge as a question of law subject to 

de novo review. 

When a defense or noninfringement theory asserted 

by an infringer is purely legal (e.g., claim construction), 

the objective recklessness of such a theory is a purely 

legal question to be determined by the judge. See Powell, 

663 F.3d at 1236. When the objective prong turns on fact 

questions, as related, for example, to anticipation, or on 

legal questions dependent on the underlying facts, as 

related, for example, to questions of obviousness, the 

judge remains the final arbiter of whether the defense 

was reasonable, even when the underlying fact question is 

sent to a jury. See Powell, 663 F.3d at 1236-37; DePuy 

Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 

1314, 1324 (Fed. Cir. 2009) (explaining that ensnarement 

has underlying factual issues but is ultimately a question 

of law for the judge that is “‘to be determined by the court, 

either on a pretrial motion for partial summary judgment 

or on a motion for judgment as a matter of law at the 

close of the evidence and after the jury verdict’” (quoting 

Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 

520 U.S. 17, 39 n.8 (1997))). 

Our holding is consistent with similar holdings in 

other parallel areas of law. Our precedent regarding 

objectively baseless claims, which allow courts to award 

enhanced damages and attorneys’ fees under 35 U.S.C. 

§ 285, and the Supreme Court’s precedent on “sham” 

litigation are instructive. For example, in iLor, LLC v. 

Google, Inc., 631 F.3d 1372 (Fed. Cir. 2011), in addressing 

the standard for showing objective baselessness for purposes of § 285, a standard which this court explained was 

“identical to the objective recklessness standard for enhanced damages and attorneys’ fees against an accused 

infringer for § 284 willful infringement actions under 

[Seagate],” id. at 1377, this court noted that “Section 285 
BARD PERIPHERAL v. WL GORE 8

must be interpreted against the background of the Supreme Court’s decision in” Professional Real Estate Investors, Inc. v. Columbia Pictures Industries, Inc. (“PRE”), 

508 U.S. 49 (1993). iLor, 631 F.3d at 1376. PRE dealt 

with immunity from antitrust liability for bringing lawsuits, which is granted unless the litigation is considered 

a sham. 508 U.S. at 51. It held that a suit will not be 

considered sham litigation unless the lawsuit is “objectively baseless in the sense that no reasonable litigant 

could realistically expect success on the merits. If an 

objective litigant could conclude that the suit is reasonably calculated to elicit a favorable outcome,” it is not 

objectively baseless. Id. at 60. And like willfulness, 

there is a subjective requirement that must be addressed 

only after the objective requirement is satisfied. Id.

The PRE Court analogized sham litigation to malicious prosecution and equated objective baselessness to a 

lack of probable cause to institute an unsuccessful civil 

lawsuit. See PRE, 508 U.S. at 62-63 (explaining that 

“[t]he existence of probable cause to institute legal proceedings precludes a finding that an antitrust defendant 

has engaged in sham litigation”). PRE cited, inter alia, 

Stewart v. Sonneborn, 98 U.S. 187 (1897) for the view that 

when “there is no dispute over the predicate facts of the 

underlying legal proceeding, a court may decide probable 

cause as a matter of law.” 508 U.S. at 64 (citing 98 U.S. 

at 194).2 Moreover, in the context of probable cause in 

 2 The Stewart Court also explained the rule when 

there are disputed facts: 

It is true that what amounts to probable 

cause is a question of law in a very important sense. In the celebrated case of Sutton 

v. Johnstone, the rule was thus laid down: 

‘The question of probable cause is a mixed 

question of law and of fact. Whether the 
9 BARD PERIPHERAL v. WL GORE

criminal cases, the Supreme Court elaborated on the 

importance of treating such questions as involving both 

law and fact and subjecting them to de novo review, which 

“tends to unify precedent.” See Ornelas v. United States, 

517 U.S. 690, 697-98 (1996) (stating that “the legal rules 

for probable cause and reasonable suspicion acquire 

content only through application [and i]ndependent 

review is therefore necessary if appellate courts are to 

maintain control of, and to clarify, the legal principles”). 

In considering the objective prong of Seagate, the 

judge may when the defense is a question of fact or a 

mixed question of law and fact allow the jury to determine 

the underlying facts relevant to the defense in the first 

instance, for example, the questions of anticipation or 

obviousness. But, consistent with this court’s holding 

today, the ultimate legal question of whether a reasonable 

person would have considered there to be a high likelihood of infringement of a valid patent should always be 

decided as a matter of law by the judge. See DePuy, 

567 F.3d at 1324. 

 

circumstances alleged to show it probable 

are true, and existed, is a matter of fact; but 

whether, supposing them to be true, they 

amount to a probable cause, is a question of 

law.’ This is the doctrine generally adopted. 

It is, therefore, generally the duty of the 

court, when evidence has been given to 

prove or disprove the existence of probable 

cause, to submit to the jury its credibility, 

and what facts it proves, with instructions 

that the facts found amount to proof of 

probable cause, or that they do not. 

Stewart, 98 U.S. at 194 (internal quotation marks and 

citations omitted). Thus, the question may sometimes be 

sent to the jury, but it remains a question of law. 
BARD PERIPHERAL v. WL GORE 10

Having clarified the legal standard for Seagate’s objective willfulness prong, we conclude that remand is 

appropriate so that the trial court may apply the correct 

standard to the question of willfulness in the first instance. See Weisgram v. Marley Co., 528 U.S. 440, 443 

(2000) (stating that “courts of appeals should ‘be constantly alert’ to ‘the trial judge’s first-hand knowledge of 

witnesses, testimony, and issues’ [and] should give due 

consideration to the first-instance decisionmaker’s ‘feel’ 

for the overall case.” (quoting Neely v. Martin K. Eby 

Constr. Co., 386 U.S. 317, 325 (1967))). In this case, Gore 

asserted several defenses that it says were “reasonable”: 

inventorship, inadequate written description, obviousness, and anticipation. Appellant’s Br. 57-58. The trial 

court, which did an exemplary job presiding over this 

complex case, did not have the benefit of this court’s 

clarification, and did not review those defenses under this 

standard. See Bard Peripheral Vascular, Inc. v. W.L. Gore 

& Assocs., Inc., 586 F. Supp. 2d 1083, 1088-89 (D. Ariz. 

2008). On remand, therefore, the court should determine, 

“based on the record ultimately made in the infringement 

proceedings,” whether a “reasonable litigant could realistically expect” those defenses to succeed. See iLor, 

631 F.3d at 1378; PRE, 508 U.S. at 60. If, in view of the 

facts, the asserted defenses were not reasonable, only 

then can the jury’s subjective willfulness finding be reviewed for substantial evidence. See Powell, 663 F.3d at 

1236. 

For the foregoing reasons, the previous determination 

of willfulness is vacated and remanded for further proceedings consistent with this opinion. 

AFFIRMED IN PART, VACATED IN PART 

AND REMANDED IN PART

No costs. 
United States Court of Appeals 

for the Federal Circuit 

__________________________ 

BARD PERIPHERAL VASCULAR, INC. 

AND DAVID GOLDFARB, M.D., 

Plaintiffs/Counterclaim 

Defendants-Appellees, 

AND

C.R. BARD, INC., 

Counterclaim DefendantAppellee, 

v. 

W.L. GORE & ASSOCIATES, INC., 

Defendant/CounterclaimantAppellant. 

__________________________ 

2010-1510 

__________________________ 

Appeal from the United States District Court for the 

District of Arizona in Case No. 03-CV-0597, Judge Mary 

H. Murguia. 

__________________________ 

NEWMAN, Circuit Judge, concurring in the vacatur, dissenting from the partial remand. 

The court now acts to correct its ruling on the subject 

of willful infringement. However, the panel majority does 

not explain why a remand is necessary at all in light of 

 
BARD PERIPHERAL v. WL GORE 2

the standard enunciated. On the correct standard, it 

seems clear that remand is unnecessary. 

The general standard for willful infringement accompanied by multiplication of damages is whether the 

accused infringer acted unreasonably and with knowledge 

that it was infringing a valid patent. Thus the determination includes an estimation of the reasonableness of the 

accused infringer’s view of patent validity and infringement, in view of all facts that could reasonably be included in the evaluation. As to whether Gore met the 

standard of willful wrongdoing, culpable action must be 

shown with sufficient definiteness to warrant the discretionary penalty of multiplication of damages, an aspect 

that invokes equity as well as law and judgment. 

Gore’s actions involve a host of potentially relevant 

facts that Gore could reasonably have believed would 

invalidate the Goldfarb patent or support Gore’s right to 

continue to produce the Gore-Tex® grafts as it had for the 

28 years of patent pendency; including (1) the ruling of 

the Patent and Trademark Office, affirmed by the Federal 

Circuit, that Gore’s employee Cooper was the first to 

conceive of the invention that was patented by Goldfarb; 

(2) the fact that Cooper provided Goldfarb with the GoreTex® tubes that Goldfarb patented; (3) the fact that 

Goldfarb tested the tubes in dogs at Cooper’s request; (4) 

the fact that others had previously tested the Gore-Tex® 

tubes in dogs and sheep, and had reported and published 

the same results that Goldfarb later patented; (4) the fact 

that the Goldfarb application was pending for 28 years, 

leaving doubt as to the outcome in the Patent Office. It is 

not irrelevant that the eventual allowance of the Goldfarb 

application included the admitted perjured affidavit of 

Denton, an affidavit that Denton asked Goldfarb to withdraw, and was refused. 
3 BARD PERIPHERAL v. WL GORE

When these aspects are considered, it is apparent that 

willful infringement is not supportable. However, if the 

court insists on retrial of willfulness, the appealed issues 

of validity and inventorship are relevant, for if Cooper has 

sole or joint inventorship rights or the right to use his 

prior information, the question of infringement evaporates, mooting any question issue of willfulness. 

Thus this court should review the issues of validity 

and inventorship on this appeal, and if appropriate order 

retrial of the entire case, in the interest of justice.